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`Fish & Richardson P.C.
`1221 McKinney Street
`Suite 2800
`Houston, TX 77010
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`713 654 5300 main
`713 652 0109 fax
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`
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`Benjamin C. Elacqua
`Principal
`Elacqua@fr.com
`713 654 5324 direct
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`July 30, 2021
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`VIA E-MAIL
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`John J. Edmonds
`jedmonds@ip-lit.com
`Edmonds & Schlather PLLC
`2501 Saltus Street
`Houston, TX 77003
`
`
`Re:
`
`GUI Global Products, Ltd D/B/A Gwee v. Apple Inc., Civil Action No. 4:20-cv-02652
`(S.D. Tex.)
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`Dear Counsel:
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`We write regarding a petition for inter partes review (IPR) being filed today with the Patent Trial and
`Appeal Board (PTAB) to address claims of U.S. Patent No. 10,259,020. The table below lists
`grounds asserted by Apple Inc. (“Apple”) in an IPR petition challenging claims of this patent, along
`with the implicated claims against which the grounds are asserted. We write to inform you that
`Apple hereby stipulates that in the event the PTAB institutes an inter partes review based on the
`petition being filed today in IPR2021-01289 and including the grounds listed in the table against the
`corresponding claims listed in the table for those grounds (“Instituted Grounds”), Apple will not
`assert the Instituted Grounds against the corresponding claims listed in the table for those grounds in
`the above-captioned litigation (4:20-cv-02652).
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`Patent No. Proceeding No.
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`Claims
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`Ground
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`10,259,020
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`IPR2021-01289 1-9, 11-15, 19
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`Obvious (§ 103) over Kim
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`10,259,020
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`IPR2021-01289 10
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`Obvious (§ 103) over Kim in view of Koh
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`10,259,020
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`IPR2021-01289 16-17
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`Obvious (§ 103) over Kim in view of Lee
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`10,259,020
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`IPR2021-01289 18
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`Obvious (§ 103) over Kim in view of Jiang
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`In so stipulating, Apple seeks to avoid multiple proceedings addressing the validity of these claims
`based on the Instituted Grounds. Rather, through this stipulation, Apple expresses its intention to
`have only the PTAB address the Instituted Grounds of invalidity of these claims. But, for the sake of
`clarity and to avoid any doubt, if the PTAB declines to institute any of the grounds identified herein
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`APPLE 1117
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`July 30, 2021
`Page 2
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`based on the petition being filed today in IPR2021-01289, Apple reserves the right to assert such
`grounds in the above-captioned litigation (4:20-cv-02652). Additionally, even in the event of
`institution, Apple reserves its rights to continue to assert all grounds other than the Instituted
`Grounds.
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`Sincerely,
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`cc: Counsel of record
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`__________________
`Benjamin C. Elacqua
`Fish & Richardson P.C.
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`July 30, 2021
`Page 3
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`Appendix – Prior Art References Used in the Listed Grounds
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`Reference Name
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`Details
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`Kim
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`Koh
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`Lee
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`Jiang
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`U.S. Patent Application Publication 2010/0227642
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`Korean Patent Publication 10-2008-0093178
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`U.S. Patent Application Publication 2010/0298032
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`U.S. Patent 5,946,121
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